IP Newsletter Issue 34 (2019-02-15)
 
About "Patent Evaluation Report"

Along with the approval of “Draft Amendment to the Patent Law” at the executive meeting of the State Council, the protection of intellectual property rights will be further strengthened. If a dispute over patent rights infringement involves a utility model patent or a design patent, the People's Court or the administrative department for patent affairs may require the patentee or any interested parties to provide a patent evaluation report made by the State Intellectual Property Office (SIPO) in accordance with paragraph 2 of Article 61 of the Patent Law. The evaluation report is necessary to clarify the stability of the patent right of a utility model and design patent and improve the credibility of the intellectual property system. This article summarizes relevant content, and it is hoped to help you for the understanding of the patent evaluation report.

I. The common usages of "Patent Evaluation Report"

1. Proof for infringement proceedings in court
2. Proof for patent rights infringement disputes dealt with by the patent administration department
3. Requirement for right protections in exhibitions
4. Customs intellectual property registration
5. The confirmation of value or stability thereof in the process of pledging, licensing and transferring of the patent right

The patent evaluation report is used as the proof at the People's Court or the patent administrative department when dealing with disputes over patent infringement, and it is mainly used by the People's Court or the patent administrative department to determine whether it is necessary to suspend the relevant procedures. The patent evaluation report is not an administrative decision, so the patentee or interested party may not initiate an administrative reconsideration and litigation.

II. Who may request the SIPO to make a patent evaluation report?

1. Patentee (may be part of the patentee)
2. Interested parties ("interested parties" means the parties who have the right to institute legal proceedings to the People's Court in accordance with the provisions of Article 60 of the Patent Law on a dispute concerning patent right infringement, or the parties who request the patent administrative department to deal with the dispute, for example, licensees of exclusive licensing contracts for implementation of a patent ; licensees of a general license contract for implementation of a patent for which the patentee has been granted the right to sue.)

III. What are the requirements for the object of "patent evaluation report"?

The authorized utility model and design patents include the utility model and design patents that have been erminated or waived.

IV. Is it necessary to entrust a patent agency?

The relevant affairs requested the patent evaluation report may be handled by the applicant or the entrusted patent agency.
Any foreigner, foreign enterprise or other foreign organization that does not have a habitual residence or business office in China shall entrust a patent agency established according to law to handle the request when making a request for a patent evaluation report.

V. How about the fees?

The patent evaluation report request fee (2400 RMB) shall be paid within one month from the date of request without reduction and postponement.

VI. What are the inadmissibility cases?

1. The applicant does not have the qualification of the requesting subject
2. A request for the case without authorized proclamation
3. A request for the case whose application date (priority date) is before October 1st, 2009 (excluding)
4. A request for the case in which an evaluation report has been made
5. A request for the case in which the patent right has been determined fully invalidated by the re-examination committee
6. Fees are unpaid

VII. What are the provisions that are involved for the examination content of a patent evaluation report?

Utility model:

Article 2, paragraph 3 of the Patent Law
Article 5 of the Patent Law
Article 9 of the Patent Law
Article 22, paragraphs 2, 3 and 4 of the Patent Law
Article 25 of the Patent Law
Article 33 of the Patent Law
Article 26, paragraphs 3 and 4 of the Patent Law
Rule 20, paragraph 2 of the Implementing Regulation of the Patent Law
Rule 43, paragraph 1 of the Implementing Regulation of the Patent Law

Design:

Article 2, paragraph 4 of the Patent Law
Article 5 of the Patent Law
Article 9 of the Patent Law
Article 23, paragraph 1 and 2 of the Patent Law
Article 25 of the Patent Law
Article 27, paragraph 2 of the Patent Law
Article 33 of the Patent Law
Rule 43, paragraph 1 of the Implementing Regulation of the Patent Law

VIII. How long will it take to get the “patent evaluation report”?

To be made within two months after the date on which the request fee has been paid and the form of the request has been reviewed as qualified. Only one patent evaluation report can be made for a utility model or design patent.